Ex Parte Schmidt

Patent Trials and Appeals Board

May 27, 2014

11911675 - (D) (P.T.A.B. May. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL
BOARD
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Ex parte PETER J. SCHMIDT
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Appeal 2012-007085
Application 11/911,675
Technology Center 2800
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Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-007085
Application 11/911,675

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Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-9 under 35 U.S.C. § 103(a) as unpatentable
over Mueller1 in view of Menkara.2 We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We AFFIRM.

ANALYSIS
Independent claims 1 and 9 are illustrative of the claimed subject
matter (see Claims App’x) and each recites the same formula for an alkaline
earth metal sulfide phosphor compound. The sole subject of the dispute in
this appeal relates to a part of that formula as discussed below.
“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.”
In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006) (emphasis omitted).
After thorough review of the respective positions provided by
Appellant and the Examiner, we AFFIRM the § 103(a) rejection on appeal
for essentially the reasons presented by the Examiner, including the
Response to Argument section. We add the following primarily for
emphasis.
The only issue in dispute is whether the formula for the alkaline earth
metal sulfide phosphor compound disclosed in Menkara teaches or suggests
the claimed alkaline earth metal sulfide phosphor compound formula (App.
Br. 6, 7).

1 Mueller-Mach et al., (hereinafter “Mueller”), US 2004/0256974 A1,
published Dec. 23, 2004.
2 Menkara et al., US 2005/0023546 A1, published Feb. 3, 2005.
Appeal 2011-007085
Application 11/911,675

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Appellant’s argument that the claimed subject matter is nonobvious
because the formula of Menkara does not disclose the claimed relationship
of “1-y” for the sulfur and “y” for the selenium as required by claims 1 and
9, with 0 ˂ y ˂ 1 (App. Br. 6, 7; Reply Br. 2-4) is unavailing as it fails to
consider the prior art as a whole.
Menkara teaches phosphors useful for white light emitting diodes of
the formula MSxSey: B, and that x and y (each of the sulfur and selenium
components of the compound) may be any value between about 0 and 1,
“subject to the proviso that the sum of x and y is equal to any number in the
range of between about 0.75 and about 1.25” (Menkara abstract; Ans. 7).
Appellant’s argument focuses on the fact that Menkara does not
identically disclose the relation of sulfur and selenium of “1-y” and “y” as
depicted in their formula. However, the amounts of sulfur and selenium in
Menkara overlap the claimed ranges for these same components in
Appellant’s phosphor compound. When claimed ranges overlap or lie inside
ranges disclosed by the prior art for every component in a claim, a prima
facie case of obviousness is established. Cf., e.g., In re Geisler, 116 F.3d
1465, 1469-70 (Fed. Cir. 1997). Indeed, the law is replete with cases in
which the difference between the claimed invention and the prior art is some
range or other variable within the claims. These cases have consistently held
that Appellant must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
Accordingly, since the Examiner has established a reasonable basis to
conclude that the claimed invention would have been obvious, the burden
shifts to the Appellant to rebut the prima facie case by providing evidence of
Appeal 2011-007085
Application 11/911,675

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unexpected results, based on comparisons with the closest prior art and
commensurate in scope with the claimed subject matter, or a showing that
the prior art teaches away from the claimed invention in any material
respect. See, e.g., In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003);
and Geisler, 116 F. 3d at 1469-70.
Appellant has not met this burden on this record.
Accordingly, we affirm the § 103 rejection on appeal.
We affirm the Examiner’s decision to reject all of the pending claims.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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